Recent BGH Decisions: Open Value Ranges and Claims for Damages from Contract Negotiations

Open value ranges

Recently, the German Federal Court of Justice issued a ruling that is of particular relevance for value ranges, in particular in connection with material compositions and processes (BGH X ZR 131/22). Value ranges such as sintering temperature ranges, or ranges regarding the fraction of one component, are regular features of patent claims. In order to achieve a broad scope of protection, it is common for ranges to be disclosed as open-ended on one side (such as “a sintering temperature of below 600°C” or “a fraction of component x is higher than 0.5 at%”).

The court ruled that such open ranges are allowed in view of sufficiency of disclosure when there is a generalizable teaching behind the open range which allows for further possibilities of improvement beyond a specific range.

It can be concluded from this ruling that having boundaries for both ends of a range can be a good fallback position, for example in dependent claims, in the case that one cannot argue for such a generalized teaching. It can also be concluded from the decision that having a range supported by exemplary embodiments covering that range can be advantageous when arguing for sufficiency of disclosure of the claimed subject matter.

Claims for damages arising from contract negotiations in Germany

Under German patent law, a patent grants the right to prohibit any third party from manufacturing, offering, placing on the market, or using a patented product. If such actions are nonetheless carried out, the patent holder may claim damages.

Recently, the German Federal Court of Justice issued a ruling (BGH X ZR 104/22) confirming that even if only the offer (negotiation of the contract) was made in Germany and all other acts (manufacturing, placing on the market etc.) were performed in another patent-free jurisdiction, compensation may be claimed. The court ruled that profits resulting from the performance of a contract which is causally linked to an infringing offer must not be excluded from the calculation of the damages caused by that offer, merely because the acts carried out in performance of this contract took place in another patent-free jurisdiction.

Legal notice:

This report provides information on legal issues and developments of interest in the field of intellectual property. No claim is made as to the completeness of this report. This report does not constitute legal advice and no liability is assumed. Since intellectual property laws and systems are multi-faceted and intricate, we recommend obtaining professional advice regarding any problem or matter before taking action with respect to any information contained in this report.

 If you have any questions or need support, please don’t hesitate to reach out to us. As a dedicated patent law firm, we’re here to assist you with your specific concerns and guide you through the legal landscape.